Elliot Williams Baker Botts Department Chair - Intellectual Property (Palo Alto) & Practice Group Chair -(Photo: Courtesy Photo) Elliot Williams, Baker Botts. (Photo: Courtesy Photo)

The U.S. Court of Appeals for the Federal Circuit has taken some flak in the last few years for inconsistent application of the U.S. Supreme Court's patent eligibility jurisprudence.

But on Friday the court drew a very bright line through one area of Section 101: the type of improvement to computer functioning that's necessary to transform an abstract idea into a patentable invention.

Judge Kimberly Moore authored a precedential opinion for a unanimous panel in Customedia Technologies v. Dish Network. She observed that patent owners have been "latching onto" language from the Supreme Court's 2014 decision Alice v. CLS Bank, which suggests that claims that "purport to improve the functioning of the computer" are eligible.

That means improving the function of the computer or the network platform itself, Moore wrote, citing past cases on network security, navigation of three-dimensional electronic spreadsheets and other examples. But it does not include improving a fundamental practice or abstract process "by invoking a computer merely as a tool," Moore wrote.

The patents before the court Friday are directed to data delivery systems that deploy programmable storage sections built into devices such as cable set top boxes and that can be leased or sold to advertisers based on user preferences. Customedia argued that its invention improves the ability to store advertising data, transfer data at improved speeds and efficiencies, and prevent system inoperability due to insufficient storage.

Moore observed that the only improvements identified in the claim specification are generic speed and efficiency improvements inherent in applying the use of a computer to any task. "This is not what the Supreme Court meant by improving the functioning of the computer itself nor is it consistent with our precedent applying this concept," she wrote.

The ruling affirms a Patent Trial and Appeal Board (PTAB) decision that held the invention unpatentable.

Baker Botts partner Eliot Williams, based in Palo Alto, California, had the winning argument for Dish Network before both the PTAB and the Federal Circuit. He said Friday's decision will provide helpful guidance both to district courts and the patent office.

"The court clarified that although inventions directed to improvements in computer functionality are eligible for patenting, merely configuring a computer to provide functionality that it itself an abstract idea is insufficient to support patent eligibility," he said in a written statement.

Also representing Dish were Baker Botts partners Hopkins Guy III, Ali Dhanani and Michael Hawes.

Raymond Mort of The Mort Law Firm represented Customedia.